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A walk down store aisles reveals a seismic shift in branding products, particularly in the personal care and beauty segment. In the 1990s, the mantra went like this: The bigger the brand name, the better. But today’s brand owners are de-emphasizing the visibility of even the most venerable brand names in favor of packaging that offers its own aesthetic appeal. Brand owners are aggressively competing to create packaging that is stylish enough to be featured out in the open as a design accessory. By doing so, they hope to transition these products from cabinets to countertops, sofa-side tables and living spaces.

Unusual oval-shaped boxes and bottles featuring graphics in a range of colors and styles to appeal to traditional and progressive consumers alike are gaining prominence. For example, Method, which has had a history of striking designs for both its personal care and home care products, rolled out its new line of bathroom-cleaning products— Le Scrub + Little Bowl Blue—so stylishly packaged that bath-accessory designers may soon find themselves out of a job. Method’s Le Scrub is advertised as “chic design” that “looks cool, sounds cool … it is cool.” As one advertising blog commented, “Suddenly toilet cleaning seems … sexy.”

It’s All About Trade Dress

As big, splashy logos fade, what is the impact on traditional branding strategies? In some of these newest packaging designs, the brand is visible only upon closer inspection of a bottle base, peel-off label or plastic shrink-wrap designed to be discarded. This de-emphasis on the brand name means that the development of unique and distinctive packaging is not just important—it is critical to product recognition, to promotion and to protection of intellectual property.

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And it is important to note that any brand-development strategy must account for a basic tenet of trademark law: Not all trade dress is created equal. Product packaging and product configuration are treated very differently by the courts, and protection strategies need to reflect these distinctions. Traditional trade dress, i.e., product packaging, refers to the box, container or bottle holding or displaying a product. The shape of the Coca-Cola bottle, the color combination of the Tiffany box and ribbon, and the dark blue curvy-shaped perfume bottle of Armani Code serve as examples of protectable trade dress. Trademark law recognizes that consumers are accustomed to identifying product packaging as an identifier of source. Accordingly, product packaging can be entitled to protection immediately upon adoption if it is sufficiently unique e.g., “inherently distinctive,” to stand out from the competition.

Product configuration, on the other hand, refers to the design or appearance of the product itself. Because product configuration often forms a part of the product’s inherent appeal, function or commercial value, courts set a higher bar for protection. Thus, in its landmark decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., the Supreme Court concluded that product design, as contrasted with product packaging, can never qualify for trademark protection without evidence of an acquired secondary meaning. Beauty and home care product packaging generally falls into the category of packaging trade dress, rather than configuration trade dress. As a result, this lower threshold for protection will generally apply.

Protecting Overall Look and Feel of an Entire Product

The ultimate success of any packaging strategy will largely depend on the consistency and uniformity of the overall look and feel of the product line. If the use of variable colors, shapes and elements deprives the product line of a single consistent overall visual image, consumers, competitors and the courts are unlikely to recognize the packaging as a trademark. If, on the other hand, the packaging uses a consistent and uniform set of colors and shapes, e.g., the sea-foam green and frosted glass typically associated with Clinique, the public is far more likely to associate those elements with a particular brand.

Why is this important for product packaging? Because, given the profusion of products in the marketplace, it is more and more difficult to develop product packaging so distinctive and unique as to qualify for protection upon initial use of the “look.” Thus, in most situations, the scope of protection afforded the trade dress will depend on the degree to which the public has come to associate it exclusively with the product.

It goes without saying that a single color or a combination of colors can serve as an important source-identifying function—provided consumers have come to associate either with a particular brand—but if a color or color combination is relatively common in the industry, the necessary association (or secondary meaning) may be impossible to establish. Thus, in one case, the court rejected alleged trademark rights in the color black for compacts, finding “countless numbers of cosmetic companies that sell black compacts” and that black is “as common a color for a makeup case as brown is for a paper bag.”

The Issue of Functionality

Functionality is yet another hurdle to keep in mind in developing and promoting a product’s trade dress. If elements forming the packaging contribute to the product’s durability, improve the efficiency of or lower the cost for, manufacture or facilitate the consumer’s evaluation of a product’s features, they will be considered functional and unsuitable for exclusive appropriation as a trademark. For example, a potpourri company can never claim trade-dress protection in transparent packaging since such packaging is among the least expensive alternatives available to the marketplace and permits consumers to both view the product and smell the fragrance—important features in any purchasing decision. Utilitarian elements are, for obvious reasons, often sufficiently commonplace that they fail to satisfy the distinctiveness requirement for trade-dress protection. Thus, in one case, the court held that “there are only a limited number of designs available for cosmetic bags,” and such “common and useful product features” as plastic coating and gold zipper pulls “must remain available to competitors.”

In addition to the classic utilitarian functionality, e.g., the shape of the tube cap helps facial cream retain its quality during transportation, trademark law also recognizes a so-called aesthetic-functionality bar to trade-dress protection. If consumers view product packaging as simply decorative and aesthetically appealing as opposed to brand identifying, the packaging will not be protectable. Thus, pumpkin-shaped candy offered at Halloween is decoratively appealing to the buyer and, accordingly, functional rather than source identifying. The shape is an “important ingredient in the commercial success of the product” because it enhances the candy’s value to those shopping for trick-or-treat giveaways. Since prohibiting imitation of this feature by others would impede competition, pumpkin-shaped Halloween candy is considered aesthetically functional and not protectable. Thus, this factor too should guide the overall design.

The Necessary Steps to Generate Secondary Meaning

Given the market obstacles to creating an inherently distinctive packaging design, creative design is only part of the marketing battle. Using marketing dollars wisely to educate consumers that a fanciful or stylish new packaging identifies the source of the product is as important, as expensive and as challenging a task as the design process itself.

Courts faced with deciding whether to grant what is, in essence, a monopoly in a style of packaging will focus on sales history, advertising budget and advertising content in reaching their decision. For example, the court concluded in a recent case that the public had come to recognize the trade dress of a fragrance line as the “hallmark of a particular source.” The court pointed to evidence that the brand owner spent more than $14 million in print and retail advertising to promote the packaging, that the packaging had been the subject of an industry award and that marketing studies showed that consumers recognized the brand owner’s packaging as a source identifier for the product.

High sales volumes and a large advertising budget alone will not support a claim of secondary meaning. The promotional campaign must direct consumers to “look for” the packaging features when shopping for a particular brand. Thus, advertisements for a new line of cosmetic products that tell consumers to “look for the purple box,” alert purchasers to the source of the product and thereby support a claim of secondary meaning. Advertisements that focus only on the aesthetic appeal of the product design or product packaging, on the other hand, will not support a claim of secondary meaning even if sales are extensive.

Conclusion

The new trend away from big splashy logos to more stylish and transitional product packaging requires marketers to refocus their trademark strategy. While product packaging can be a source identifier, some key concepts must drive the design and marketing efforts. The primary goal of trademark law is to protect against consumer source confusion, not to reward creativity. While product packaging that is so unusual and unique, e.g., “inherently distinctive,” can qualify for trademark protection immediately upon introduction to the market, given the realities of the marketplace, such packaging is more and more difficult to create. The consistency and uniformity of the elements and overall appearance of the product line will factor significantly in the ultimate success of any packaging-based strategy.

Julia Anne Matheson is a partner in the Washington, D.C. office of Finnegan, a global intellectual property law firm, where she practices a full range of trademark services—including trademark prosecution, client counseling and trademark clearance.

Anna Balichina is a law clerk in the Washington, D.C. office of Finnegan.